Report on WIPO Client Privilege Meeting Kenji Asai Co-chair of Patents Committee August 6, 2008 1. Date and Venue May 22 to 23, 2008 at WIPO HQ in Geneva 2. Attendants -29 member states (Australia, Belgium, Canada, China, Denmark, US, Finland, United Kingdom (UK), Singapore, Switzerland, etc.) -2 intergovernmental organizations (United Nations and WTO) -19 NGOs (APAA, AIPLA, JPAA, CIPA, FICPI, IPIC, EPI, etc.) -98 individuals from 40 states (General Layers, Patent Attorneys, company persons, etc.) -4 attendants from WIPO -Mr. Francis Gurry, Deputy Directer General -Philippe Baechtold, Head of Patent Law Section -Mr. Ewald Glantschnig, Senoir Counsellor of Patent Law Section -Ms. Tomoko Miyamoto, Senoir Counsellor of Patent Law Section 3. 20 speakers or presenters -Mr. Ronald Myrick (President of AIPPI) (USA) -Mr. Jochen Bühling, Reporter General of AIPPI -Mr. Michael Dowling, Allens Arthur Robinson (Australia, Melbourne) -Dato V.L. Kandan, Consultant of Shearn Delamore & Co., (Malaysia) -Mr. Steven Garland, Partner of Smart & Biggar (Canada) -Mr. Pravin Anand, Senior Partner of Anand and Anand (India) -Mr. Thierry Mollet-Vieville, Vice president of AIPPI (France) -Ms. Anette Hegner, Vive chair of EPI (Denmark) -Mr. Yuzuru Okabe, Okabe International Patent Office (Japan) 1
-Mr. Cristobal Porzio, Porzio, Rios & Associates (Chile) -Mr. David Musker, Partner of RGC Jenkins (United Kingdom) -Mr. Thierry Calame, Deputy Reporter General of AIPPI (Switzerland) -Ms. Van Zant, FICPI (Canada) -Mr. Alan Senior, FICPI (United Kingdom) -Mr. David Hill, Finnegan, Henderson, Farabow, Garrett & Dunner (USA) -Mr. Timothy Jackson, Partner of Baldwin (New Zealand) -Mr. Wouter Pors, Partner of Bird & Bird (Netherlands) -Mr. Michael Jewess, ICC (United Kingdom) -Mr. Eric le Forestier, FICPI (France) -Mr. Chew Phye Keat, Senior Partner of Raja, Darryl & Loh (Malaysia) (As for the full contents of the presentations made by the speakers, please refer to website: www.wipo.int/meetings/en/details.jsp?meeting_id=15183. 4. Content of the meeting 4.1 Object of the meeting i) This meeting was held under the following background. In 2003, AIPPI accepted Resolution to the effect that AIPPI supports the provision through all of the national jurisdictions of rules of professional practice and/or laws which recognize that the protections and obligations of the attorney-client-privilege should apply with the same force and effect to confidential communications between patent and trademark attorneys, whether or not qualified as attorneys at law and their clients. Then, in 2005, AIPPI sent their submission to WIPO, wherein AIPPI submits that the making (including subsequent implementation) of a treaty prescribing minimum standards of privilege which are to apply to communications relating to advice given by IP advisers, is required and the protection of privilege in one country must be extended by that country to an IP adviser in any other country. However, since then, there has not been any development concerning the situation. Therefore, AIPPI proposed to WIPO to have a joint meeting so as to advance this situation so as to form motivation leading to the making of a treaty. ii) Therefore, this meeting was held to advance this situation so as to form motivation leading to the making of a treaty ("motivate to pave the road to making a treaty") concerning the client privilege as harmonization. iii) In this respect, this joint meeting was formulated as a study meeting in 2
order to evaluate the current situation or problem that IP professionals are now facing in respect of the protection of the confidential communications between IP professionals (especially, patent agents etc.) and their clients, as well as to consider possible way of dissolving the problems. 4.2 What is the problem? i) In order to understand the current problem that for example, the patent agents are now facing in respect of the protection of the confidential communications between patent agents and their clients, the following cases will be addressed, which cases were often referred to by several speakers in their presentations in the meeting. 3
AU 2004 UK CA 2006 2004 Australia case: Eli Lilly & Company v Pfizer Ireland Pharmaceuticals (No 2) [2004] FCA 850 (30 June 2004) 2006 Canada case: Lilly Icos LLC v. Pfizer Ireland Pharmaceuticals, 2006 FC 1465, (2006), (2007)2 F.C.R. D-12 ii) Situation: The patentee (collectively "Pfizer") filed a PCT application based on UK basic application wherein Australia (AU) and Canada (CA) were designated. Several years passed, the patents were issued in UK, AU and CA (of course, also in other countries). Then, the litigations were initiated in AU and then CA. Please note that UK, AU and CA are common law countries and a discovery system is employed in the court procedure in these three countries. In the discoveries of the litigations in AU and CA, the opponent (collectively "Lilly") requested the patentee to produce documents concerning the communications between the UK patent agents and their client. iii) In AU case 4
In the U.K., confidential communications between a patent agent and his or her client are privileged from being disclosed in the discovery under the UK law. In AU, confidential communications between a patent agent and his or her client are privileged under the AU law. However, the privilege is not applied to the communications between a foreign patent agent and his or her client under the AU law unless such foreign patent agent is registered in AU. Since the UK patent agent was not registered in Au, the Australian Federal Court decided that the confidential communications (in the U.K.) between the U.K. patent agent and the patentee are not privileged, and accordingly, the confidential communications between the U.K. patent agent and the patentee were not protected from being disclosed in the discovery under the AU litigation. iv) In CA case In Canada, confidential communications between a general layer and his or her client are privileged under CA law. However, confidential communications between a patent agent and his or her client are not privileged under CA law patent. Since the UK patent agents are not a general layer, the Canadian Federal Court decided that the confidential communications between the U.K. patent agents and their client are not privileged, and accordingly, the confidential communications between the U.K. patent agent and the patentee were not protected from being disclosed in the discovery under the CA litigation. v) Even in the same common law countries, the confidential communications between a patent agent and his or her client, which has been privileged in one country, is no more privileged in another country. This situation may be sometime fatal for the client when the client would try to protect and enforce its IP rights worldwide. The client needs to have full and frank communications with IP advisers in the countries where the client wishes to obtain or has obtained its IP rights, so as to obtain the best possible advice from such IP professionals in such countries. Once confidential communications have been disclosed in one country, such communications may be disclosed in other countries as non-confidential or non-privileged communications. This problem may be also true for the countries having different law systems, as where the confidential communications have been privileged or protected in a first civil law country, and the discovery is requested in the second 5
common law country concerning the confidential communication privileged in such a first civil law country. vi) In view of the background together with the historical activity of AIPPI concerning the protection of client privilege, this joint meeting was held. 4.3. Subjects to be discussed (cf. PROGRAM: WIPO-AIPPI/IP/GE/08/INF/1) i) Recognition and understanding of the problem: This subject was discussed in the order as follows. i-1) Scope of privilege and issues in some common law systems such as Malaysia, Canada and India. i-2) Scope of privilege and issues in some civil law systems such as France, EP, Japan and some south American countries (Chili, Argentine, Brazil, Columbia and Peru) i-3) Pitfalls and obstacles for clients operating in multiple jurisdictions. detail. In this subject, several specific and imaginary cases were introduced in ii) What are the problems and issues? In this respect, the problems and issues were considered and discussed from the following perspectives. ii-1) Is Client Privilege a matter of a public interest or a private interest? Where does the balance lie between those interests? ii-2) Outcomes of litigation and needs arising in relation to client/ip professional privilege conducted in particular countries: Australia, Canada, United Kingdoms and United States of America ii-3) Experience with recent developments in various jurisdictions (New Zealand and Netherlands) ii-4) Privilege-the perspective of companies including those with in-house IP counsel ii-5) Summary of the problems and issues involved in solving the problems from different perspectives 6
iii) Prospects for improvement: What are the options? iv) Panel discussion with questions and answers 4.4 Summary of discussions in the meeting: i) In the order of the above items, the discussion proceeded in the meeting. First, the speakers presented the subjects related to the items and discussion took place. ii) In the panel discussion (iv), it was agreed that it is no doubt that it is important that the confidential communications between an IP professional and his or her client which are privileged in one country should be recognized in the other countries. No attendants opposed this recognition. However, there are wide opinions concerning what IP professions should be covered and what type of IP should be protected. There are many opinions to the effect that IP professionals whose confidential communications with their clients are privileged should be registered and authorized in one country. One opinion is that, although in principle, privilege should be attached to communications between broadly various kinds of IP professionals and their clients, some exclusion for IP professionals who would not be covered may be prescribed or listed, if necessary. As for the kinds of IPs, the protection should be broadly applied to various kinds of IPs such as patent, trademark, copyright, computer software, data base, etc. iii) From the company side, there was an opinion that confidential communications by in-house Patent attorneys should be also privileged, in order to reduce any problem for making a treaty concerning Client privilege. iv) As the future matter, WIPO would plan to propose the issue concerning Client privilege as one of the items to be discussed in the coming general assembly meeting to be held around October this year. If the member states agree to accept this issue, a working group would be established so that the first step is advanced to the making of a treaty. v) On the other hand, it was emphasized that it should be necessary to explain the importance of harmonization of client privilege to governments and patent offices so that they could support the harmonization of the protection of client privilege. (End) 7